UNITED STATES: TTAB Decision Is “Modest Extension” of Section 18 Partial Cancellation Precedent

The Trademark Trial and Appeal Board (the Board) sustained the opposition to the registration of the service mark SAGEFORTH for “providing information in the field of psychological counseling, assessments, diagnosis, and treatment” based on a likelihood of confusion (Section 2(d)) with the registered mark SAGE CENTRAL for “providing health and medical information about postpartum depression and treatment.”

The Board found the mark in the opposed application to be similar in appearance, sound, meaning, and commercial impression to the registered mark, and that the psychological services of the applicant, SageForth Psychological Services, could cover services related to postpartum depression as covered by the SAGE CENTRAL registration. Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC, 2024 USPQ2d 689 (TTAB 2024) (precedential).

Sage Therapeutics, Inc. (the opposer) alleged priority in and likelihood of confusion with six registered marks. In sustaining the opposition, the Board limited its analysis solely to the opposer’s SAGE CENTRAL registration. The Board’s decision to limit the scope of the Section 2(d) analysis is the result of SageForth Psychological Services, LLC’s (the applicant’s) Section 18 (15 U.S.C. Section 1068) counterclaim for partial cancellation of four of the pleaded registrations for Sage Therapeutics covering “house mark for pharmaceutical preparations.” The applicant sought to restrict these registrations to “house mark for pharmaceutical preparations that treat post-partum depression” to avoid a likelihood of confusion.

To prevail on its Section 18 counterclaim, the applicant needed to prove: (1) the proposed amendment avoids a likelihood of confusion finding; and (2) the proposed amendment is supported by the evidence. Wellcome Found. Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998) (citing Eurostar v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994)). Given the Board sustained the opposition based solely on the opposer’s SAGE CENTRAL registration and not any of the opposer’s registrations subject to the Section 18 counterclaim, the Board decided prong 1 was not satisfied.

Notably, the Board dismissed the applicant’s counterclaim without prejudice. As the Board only addressed the right to registration and not the right to use the mark in commerce, the Board acknowledged the possibility of the opposer asserting the same four registrations in an infringement proceeding against the applicant. In expanding the Eurostar holding, the Board found that a Section 18 counterclaim should be denied without prejudice if the Board sustains a Section 2(d) opposition based on registrations that are not challenged by the counterclaim.

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